Ex parte GRIMM et al. - Page 5




          Appeal No. 1997-3797                                       Page 5           
          Application No. 08/121,820                                                  


               In reaching our decision in this appeal, we have given                 
          careful consideration to the appellants' specification and                  
          claims, to the applied prior art references, and to the                     
          respective positions articulated by the appellants and the                  
          examiner.  Upon evaluation of all the evidence before us, it                
          is our conclusion that the evidence adduced by the examiner is              
          insufficient to establish a case of obviousness with respect                
          to the claims under appeal.  Accordingly, we will not sustain               
          the examiner's rejection of claims 25 to 41 under 35 U.S.C.                
          103.  Our reasoning for this determination follows.                         


               The appellants argue that the applied prior art does not               
          suggest the claimed subject matter.  We agree.                              


               Obviousness is tested by "what the combined teachings of               
          the references would have suggested to those of ordinary skill              
          in the art."  In re Keller, 642 F.2d 413, 425, 208 USPQ 871,                
          881 (CCPA 1981).  But it "cannot be established by combining                
          the teachings of the prior art to produce the claimed                       
          invention, absent some teaching or suggestion supporting the                
          combination."  ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732                







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